Over the last decade or more, the U.S. Supreme Court has taken great interest in patent cases. Presently, the Supreme Court has four pending patent cases, for which oral arguments will be completed by the end of April 2014, with decisions to be issued by the end of June. These cases address issues that arise in varying degrees in patent cases. But there is one issue that will come up before the Supreme Court because it applies in virtually all such patent cases — claim construction.

At the end of February 2014, in Lighting Ballast v. Phillips Electronics, a deeply-divided, en banc Court of Appeals for the Federal Circuit upheld a 15-year-old doctrine, from Cybor v. FAS Technologies, which permits de novo review of claim construction in patent cases. In short, Lighting Ballast confirmed that no deference should be given to district courts when they construe patent claims (even for underlying issues of fact, including “historical fact”).

Though it merely upholds existing law, the Lighting Ballast decision is sure to be controversial for many reasons. For instance, the reversal rate for claim construction is often estimated or perceived to be more than double the reversal rates in general (e.g., approximately 50 percent vs. 20 percent). Many hoped that deference would reduce the reversal rate.

Moreover, the Federal Circuit split was 6-4, with three lengthy opinions filling more than 80 pages. The opinions, reflecting both concurrence and dissent, were written by the three longest-tenured, active judges on the Court (Newman, J., Lourie, J., and Rader, C.J., respectively). Judge Newman’s majority opinion was contrary to the dissent she expressed in the en banc Phillips v. AWH Corp. case in 2005. While her opinion in Lighting Ballast upholds Cybor, the dissent she raised in Phillips criticized Cybor for creating an “irrational and reckless regime.”

But the Supreme Court should not review the issue of deference, a procedural one, in Lighting Ballast. Instead, the Federal Circuit or Supreme Court should review the proper rules for claim construction, a substantive issue, which the Federal Circuit last decided en banc nine years ago, in Phillips.

Some of the reasons why claim construction should keep its de novo review status were stated in the en banc Lighting Ballast decision. Stare decisis appeared to be a major reason for maintaining Cybor’s de novo review. Another reason was that, although many bar associations disagreed with Cybor, every company that spoke as a friend of the court was in favor of upholding Cybor.

Other grounds for upholding Cybor were not stated or discussed in the decision. But a deferential standard for claim construction was cited as unhelpful for a number of reasons. The Federal Circuit was created in the early 1980s to establish national uniformity in patent law. Deferring to district courts on issues of claim construction would have the potential to create inordinate power on the district court level, and a lack of uniformity.

For example, erroneous district court claim constructions regarding specific patents could be permitted to stand, so long as claim constructions were not clearly erroneous. Also, the recently adopted America Invents Act (2011) requires patent owners to file claims against different products in independent cases. Based on forum and jurisdiction, this often requires multiple suits in multiple courts. A deferential standard of review in multi-defendant cases could lead to a greater possibility of different claim constructions from different courts, which may be allowed to stand under a deferential standard.

Another problem is that deference would encourage even more “forum shopping” than already exists in patent cases. If the district court decision on claim construction is more important than the case outcome, then certain districts would be targeted even more in the future than they are presently.

Rather than give more deference to all claim construction rulings, including erroneous ones, a better approach would be to address the substantive claim construction standard itself. As the dissent observed nine years ago in Phillips, the Federal Circuit directed numerous questions to the parties and the patent bar, but only answered a handful of them. Better substantive guidance to the parties and to trial courts would likely achieve better results than deference to certain aspects of claim construction rulings.

As to substantive rules of claim construction, the dissent in Phillips states that the en banc Court “say[s] nothing new, but merely restate[s] what has become the practice over the last ten years—that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case.”

As a result, it is time to revisit the substantive rules for claim construction, rather than mask shortcomings by changing procedural rules. It's time to revisit Phillips, not Cybor.

Contributing Author

Scott McBride

Scott McBride (smcbride@mcandrews-ip.com) is a shareholder at McAndrews, Held & Malloy. Scott has more than 15 years of experience in patent litigation and...